• Russell Kinsey

Trademark Basics 1 - Application Basis

1. Application Basis (current use/intent to use)

Federal trademark rights are granted to those who are using a particular mark in commerce. The purpose of allowing registration, and thereby exclusive use, is to protect the consumer from knockoffs and ensure they can determine the company responsible for the product or service they are consuming. Thus the first application basis is based on a claim of current use of the mark. If the applicant claims this basis, they will be required to provide a date upon which the mark was first used in commerce, and a specimen of the mark as it appears in commerce.

But what if you need to register a trademark that you haven’t yet started to use in commerce. The significant delays in processing trademark applications can lead to a period of time when the mark is in use but not protected in areas of the US where the sales are not taking place. (See post on Prior Users v. Federal Registrants for more on that topic.)

The second application basis, intent to use, allows the applicant to test the process and determine if the mark is capable of federal registration prior to actually placing the mark in commerce. Once the intent to use application has been examined and found to be registerable, the applicant then has a few years (initially 6 months but longer if necessary with extensions) to place the mark in commerce and submit a specimen. This process can also be useful for existing businesses that are looking to change their mark or name.

Whenever making these decisions, you should consult a trademark attorney to ensure that you are selecting a protectable mark.